CA-2025-000162 - [2025] EWCA Civ 1340

This ground of appeal takes as its starting point the question which the judge left hanging at the end of [139], namely whether TB was correct to submit that “the CJEU made clear in Dyson that it is not acceptable to have a description which allows for what TB describes as ‘additional unrepresented signs’, i.e. signs which are not depicted in the graphic representation because that representation is merely said to be an ‘example’”. adidas contends that it is evident from what the judge went on to say, in particular in the last sentence of [194], that she accepted that submission and that she was wrong in law to do so.

TB accepts that, if the judge had held that the fact that the written descriptions of the Trade Marks embraced variants which were not shown in the pictorial representations was inevitably fatal to registrability, she would have made an error of law. As TB points out, however, the judge said no such thing. As TB submits, her reasoning was to the contrary effect. She expressly held at [135] that the mere fact that a mark included a number of variations would not inevitably render it invalid, and she went on in [137] to indicate that it was not invariably necessary for variations to be shown in a series of images or marks. Furthermore, as noted in paragraph 58 above, she interpreted the Trade Marks as embracing stripes on the other sleeve, leg or side to those shown in the pictorial representations, yet she did not hold that they were invalid on that account. Still further, she held at [247] that a trade mark featuring three stripes on the upper of a laced-up shoe in the area between the laces and sole was valid even though the length of the stripes would vary depending on the style of the shoe.

TB also accepts that it is clear from the judge’s reasoning that she considered it relevant that the written descriptions embraced variations which were not shown in the pictorial representations. TB submits that it is clear from the case law that the judge was correct to regard this as a relevant, but not conclusive, factor with respect to the first condition (and also the second condition) in Article 2 of the Directive. I did not understand counsel for adidas in the end to dispute this, but in any event I agree with TB.

As the judge recognised, it is adidas’ own case that the pictorial representation in each Trade Mark is a non-limiting example of what is encompassed by the written description. As the judge also recognised, the question is whether the extent of the variations embraced by the written description is impermissible. More precisely, so far as the first condition is concerned, does it mean that the subject-matter of the registration is not a single sign whose appearance may vary within permissible limits, but a multiplicity of signs? In asking herself that question, and answering it, the judge did not err in law.